Somero Enterprises, Inc v. Line Dragon et al

Filing 42

OPINION AND ORDER granting in part and denying in part 36 Motion to Strike Affirmative Defenses and Motion to Dismiss Counterclaim. The affirmative defenses are dismissed without prejudice to filing amended defenses, and the 33 Counterclaim is dismissed without prejudice to filing an Amended Counterclaim, all within 14 days of this Opinion and Order. Signed by Judge John E. Steele on 8/10/2018. (RKR)

UNITED STATES DISTRICT COURT
MIDDLE DISTRICT OF FLORIDA
FORT MYERS DIVISION
SOMERO ENTERPRISES, INC., a
Florida corporation,
Plaintiff,
v.

Case No:

DANIEL
R.
individual,

STOLTZFUS,

2:18-cv-161-FtM-29CM

an

Defendant.
OPINION AND ORDER
This matter comes before the Court on Plaintiff's Motion to
Strike Affirmative Defenses Pursuant to FRCP 12(f) and to Dismiss
Counterclaim Pursuant to FRCP 12(b)(6) (Doc. #36) filed on June
29, 2018.
I.

Plaintiff filed a Response (Doc. #37) on July 13, 2018.

Background
On

March

13,

2018,

plaintiff

Somero

Enterprises,

Inc.

(plaintiff) initiated its Complaint (Doc. #1) against Line Dragon,
LLC

and

Daniel

R.

Stoltzfus

(defendant).

On

May

23,

2018,

defendant Line Dragon, LLC was dismissed without prejudice and
judgment was directed as to this defendant.

(Doc. #28.)

On May

25, 2018, an amended pleading was filed to reflect the dismissal.
(Doc. #30.)
Plaintiff
installation.

develops

and

produces

equipment

for

concrete

To deliver concrete to areas distant from concrete

mixing trucks, heavy hoses are used.

Plaintiff and defendant both

make and sell hose pullers and placers to move and position
concrete hoses, usually using two small tractors in tandem.
#30, p. 1.)

(Doc.

Defendant is the alleged inventor and owner of the

‘957 Patent, and his company makes and sells a hose pulling machine
alleged to be covered by the patent.

Defendant has publicly

accused plaintiff of infringing the Patent by making and selling
the Somero SP-16 Concrete Hose Puller.

As a result, plaintiff’s

customers have stopped purchasing its SP-16 hose pullers.
alleged

that

defendant’s

patent

infringement

claim

is

It is
false.

(Id.)
By and through the First Amended Complaint for Declaratory
Judgment of Non-Infringement and Invalidity (Doc. #30), plaintiff
seeks a declaration that plaintiff did not infringe on United
States Patent NO. 8,312,957 (‘957 Patent), and/or a declaration
that the ‘957 Patent is invalid.
II.

Motion to Strike Affirmative Defenses

Plaintiff argues that the affirmative defenses are pled in a
shotgun manner because the defenses address the Complaint as a
whole.

(Doc. #36, p. 20.)

The Court finds that the defenses are

not generically pled in a shotgun manner.

The First Amended

Complaint seeks only two related declarations: that plaintiff did
not infringe the ‘957 Patent, and that the Patent is in fact
invalid, the opposite of what defendant seeks.

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The Second and

Third

Defenses

clearly

respond

directly

to

the

issue

of

infringement, and the First and Fourth Defenses clearly respond
directly to the issue of validity.

The Second and Third Defenses

do lack sufficient supporting facts as to what part of the Patent
plaintiff infringed or induced to infringe as addressed more
precisely below.

The motion will be denied as to the general

pleading deficiency argument.
A. Applicable Law
The Federal Rules require defendants to “affirmatively state
any avoidance or affirmative defense.”

Fed. R. Civ. P. 8(c).

“An

affirmative defense is generally a defense that, if established,
requires judgment for the defendant even if the plaintiff can prove
his case by a preponderance of the evidence.”

Wright v. Southland

Corp., 187 F.3d 1287, 1303 (11th Cir. 1999).

Pursuant to Rule

12(f), courts may strike “insufficient defense[s]” from a pleading
upon a motion so requesting, or sua sponte.

Fed. R. Civ. P. 12(f).

To properly plead an affirmative defense, it must contain
“some

facts

establishing

a

nexus

between

the

elements

of

an

affirmative defense and the allegations in the complaint,” so as
to provide the plaintiff fair notice of the grounds upon which the
defense rests.

Daley v. Scott, No: 2:15-cv-269-FtM-29DNF, 2016

WL 3517697, at *3 (M.D. Fla. June 28, 2016).

Boilerplate pleading

– that is, merely listing the name of the affirmative defense
without providing any supporting facts – is insufficient to satisfy

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Rule 8(c), because it does not provide notice sufficient to allow
the plaintiff to rebut or properly litigate the defense.

Id.

(citing Grant v. Preferred Research, Inc., 885 F.2d 795, 797 (11th
Cir. 1989); Hassan v. U.S. Postal Serv., 842 F.2d 260, 263 (11th
Cir.

1988)).

Defendant

must

also

avoid

pleading

shotgun

affirmative defenses that “address[] the complaint as a whole, as
if each count was like every other count.”

Byrne v. Nezhat, 261

F.3d 1075, 1129 (11th Cir. 2001), abrogated on other grounds as
recognized by, Nurse v. Sheraton Atlanta Hotel, 618 F. App'x 987,
990 (11th Cir. 2015); see also Paylor v. Hartford Fire Ins. Co.,
748 F.3d 1117, 1127 (11th Cir. 2014).

District courts have a sua

sponte obligation to identify shotgun affirmative defenses and
strike them, with leave to replead.

See Paylor, 748 F.3d at 1127;

Morrison v. Executive Aircraft Refinishing, Inc., 434 F. Supp. 2d
1314, 1318 (S.D. Fla. 2005).
B. First and Fourth Defenses
Defendant’s

First

Affirmative

Defense

alleges

that

that

plaintiff is collaterally estopped from challenging the validity
of the ‘957 Patent because upon reexamination and presentation of
alleged prior art, the United States Patent and Trademark Office
upheld the validity of the ‘957 Patent.

The Fourth Affirmative

Defense is that the ‘957 Patent is not invalid because the United
States Patent and Trademark Office rejected plaintiff’s prior art
as invalidating.

(Doc. #33, pp. 5, 6.)

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Plaintiff

argues

that

both

defenses

fail

because

they

incorrectly seek to apply the doctrine of collateral estoppel
because it was not a participant in the ex parte reexamination of
the ‘957 Patent and therefore cannot be collaterally estopped by
the administrative proceeding because it had no opportunity to be
heard.

Defendant asserts that plaintiff’s failed challenge of the

validity of the Patent is clearly the basis for the defenses, and
therefore plaintiff has fair notice.
Collateral

estoppel

must

be

presented

defense under Fed. R. Civ. P. 8(c)(1).

as

an

affirmative

The doctrine of collateral

estoppel is not unique to patent cases, and therefore the court
looks to “precedent of the regional circuit.”

Aspex Eyewear, Inc.

v. Zenni Optical Inc., 713 F.3d 1377, 1380 (Fed. Cir. 2013) (citing
Christo v. Padgett, 223 F.3d 1324, 1339 (11th Cir. 2000) for
principles of estoppel).

“For the doctrine of collateral estoppel

to apply to bar relitigation of an issue, five elements must be
present: “(1) an identical issue must have been presented in the
prior proceedings; (2) the issue must have been a critical and
necessary part of the prior determination; (3) there must have
been a full and fair opportunity to litigate that issue; (4) the
parties in the two proceedings must be identical; and (5) the
issues must have been actually litigated.”

Criner v. State, 138

So. 3d 557, 558 (Fla. 5th DCA 2014) (citations omitted).
A key element of the Defenses is that both parties were the

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same,

and had an opportunity to fully and fairly litigate the

identical

issues.

No

such

allegations

are

contained

in

the

Defenses, an plaintiff states that it was not provided a full and
fair opportunity to litigate the issue of infringement because the
validity of ‘957 Patent was upheld in light of prior art submitted
by defendant to the USPTO.

If defendant’s position is that

plaintiff actually took part in the reexamination process and is
thus barred from relitigating the issue, defendant may be able to
amend to more clearly assert the defenses.

Currently, the Court

finds that defendant cannot assert collateral estoppel.

The

motion to strike will be granted as to these two defenses.
C. Second and Third Defenses
The Second Affirmative Defense asserts that plaintiff is
precluded from pursuing its claim by reason of its own actions and
course

of

conduct,

including

estoppel

and/or

unclean

hands,

because plaintiff infringed and continues to infringe upon the
‘957 Patent by making, selling, and offering for sale the SP-16.
The Third Affirmative Defense alleges that plaintiff is precluded
from pursuing its claim by reason of its own actions and course of
conduct, including estoppel and/or the doctrine of unclean hands,
because it induced others to infringe the ‘957 Patent.

(Doc. #33,

pp. 5, 6.)
Plaintiff argues that the Defenses fail as a matter of law
because if it is successful on either Count, there could be no

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judgment

for

defendant

based

on

plaintiff’s

infringement.

1

Plaintiff also argues that the defenses fail to provide sufficient
notice as both are conclusory, and neither provide a legal basis
or factual support.

Defendant argues that plaintiff is “a patent

infringer and inducer”, and therefore cannot come to the Court to
seek equitable relief.
As a preliminary matter, the use of “including but not limited
to estoppel and/or the doctrine of unclean hands” makes it unclear
if

defendant

Assuming
defenses,

the

seeks

to

defense

defendant

incorporate
is

must

unclean

multiple
hands

demonstrate

for

that

defenses
both

the

in

one.

affirmative

“wrongdoing

is

directly related to the claim against which it is asserted”, and
even if directly related, show that the “wrongdoing does not bar
relief unless the defendant can show that it was personally injured
by [plaintiff’s] conduct.”

Calloway v. Partners Nat. Health

Plans, 986 F.2d 446, 451 (11th Cir. 1993) (citations omitted).
The use of the SP-16 is central to all claims: plaintiff
asserts that it did not infringe defendant’s Patent by use of the
SP-16, and seeks a declaration confirming its position; defendant
asserts there was infringement of a valid Patent by use of the SP16.

As currently pled, the Court cannot determine the specific

wrongdoing by plaintiff that would directly relate to plaintiff’s

1

The Court notes that lack of success would mean a finding
of infringement by plaintiff.

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claim of noninfringement other than defendant’s position that
plaintiff in fact is infringing on the Patent.

Also, defendant

does not specify what claim or claims of the Patent are being
infringed.

The motion to strike will be granted because the

allegations are too vague for plaintiff to have adequate notice as
to how plaintiff’s wrongdoing is directly related to the claim of
non-infringement, or what injury defendant has suffered at the
hands of plaintiff’s wrongdoing.
III. Motion to Dismiss Counterclaim
The Counterclaim for Patent Infringement (Doc. #33, p. 7)
alleges willful direct patent infringement by plaintiff.
factual

basis

provided

is

as

follows:

Daniel

The

Stoltzfus

(Counterclaimant) conceived of the Apparatus for Moving Concrete
Pump Hoses described in the ‘957 Patent issued on November 20,
2012.

Counterclaimant owns the Patent, and Line Dragon LLC was

formed to allow counterclaimant to manufacture and sell concrete
pump hose machines.
Somero

Enterprises,

counterclaimant

in

2016

Inc.
to

(counter-defendant)

discuss

purchasing

met

his

with

company,

including the ‘957 Patent, but the discussions were not fruitful.
Counter-defendant was determined to enter the marketplace with a
competitive

machine

and

introduced

the

SP-16

hose

puller.

Counterclaimant became aware of the SP-16, which is alleged to
infringe his Patent.

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The ‘957 Patent includes three independent claims, and 18
dependent

claims

counterclaimant.

that

provide

an

economic

benefit

to

The ‘957 Patent is in force and presumed valid,

and counter-defendant induced others, including its dealers, to
infringe the ‘957 Patent.

Counterclaimant was damaged by the

infringement, and will suffer irreparable harm if the infringement
continues.

Counterclaimant

seeks

the

entry

of

a

permanent

injunction restraining the making, using, selling, or offering for
sale products that infringe the ‘957 Patent.
The single claim for direct and indirect patent infringement 2
asserts that counter-defendant has infringed and may still be
infringing at least one of the claims of the ‘957 Patent.

It is

further alleged that counter-defendant induced infringement of at
least

one

of

the

claims

of

the

‘957

Patent

by

inducing,

encouraging, and facilitating one or more of its distributors to
use, sell, and/or offer for sale the SP-16.
alleges

that

counter-defendant’s

infringement

evidenced by the motivation to compete.
injunctive

relief,

compensatory

Counterclaimant
was

willful

as

Counterclaimant seeks

damages,

lost

profits

and

reasonable royalties, treble damages, interest, and attorney fees.

2

The Count is titled as “Willful Direct Patent Infringement”,
but refers to direct and indirect infringement in paragraph 19.
(Doc. #33.)

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A. Applicable Law
Under Federal Rule of Civil Procedure 8(a)(2), a Complaint
must contain a “short and plain statement of the claim showing
that the pleader is entitled to relief.”

Fed. R. Civ. P. 8(a)(2).

This obligation “requires more than labels and conclusions, and a
formulaic recitation of the elements of a cause of action will not
do.”

Bell Atl. Corp. v. Twombly, 550 U.S. 544, 555 (2007)

(citation omitted).

To survive dismissal, the factual allegations

must be “plausible” and “must be enough to raise a right to relief
above the speculative level.”

Id. at 555.

See also Edwards v.

Prime Inc., 602 F.3d 1276, 1291 (11th Cir. 2010).
“more

than

accusation.”

an

unadorned,

Ashcroft

v.

This requires

the-defendant-unlawfully-harmed-me
Iqbal,

556

U.S.

662,

678

(2009)

(citations omitted).
In deciding a Rule 12(b)(6) motion to dismiss, the Court must
accept all factual allegations in a complaint as true and take
them in the light most favorable to plaintiff, Erickson v. Pardus,
551 U.S. 89 (2007), but “[l]egal conclusions without adequate
factual support are entitled to no assumption of truth,” Mamani v.
Berzain, 654 F.3d 1148, 1153 (11th Cir. 2011) (citations omitted).
“Threadbare

recitals

of

the

elements

of

a

cause

of

action,

supported by mere conclusory statements, do not suffice.” Iqbal,
556 U.S. at 678.
with

a

“Factual allegations that are merely consistent

defendant’s

liability

fall

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short

of

being

facially

plausible.”

Chaparro v. Carnival Corp., 693 F.3d 1333, 1337 (11th

Cir. 2012) (citations omitted).

Thus, the Court engages in a two-

step approach: “When there are well-pleaded factual allegations,
a court should assume their veracity and then determine whether
they plausibly give rise to an entitlement to relief.”

Iqbal, 556

U.S. at 679.
B. Arguments
Counter-defendant

argues

that

the

Counterclaim

must

be

dismissed because it provides only conclusory statements with no
factual support.

Specifically, no description of the infringing

SP-16 is provided, or no information as to what aspect of the SP16 infringes the Patent.

Without additional information, counter-

defendant argues it has insufficient notice of the claims against
it.
Reliance

on

plaintiff’s

First

Amended

Complaint

and

its

exhibits for the Counterclaim’s factual basis is simply misguided
because the burden to state a claim is on counterclaimant. 3

The

Counterclaim does not reference or incorporate the facts in the
First Amended Complaint, or its exhibits.

3

The Court agrees that

Plaintiff responds that plaintiff is on notice because the
Exhibits to the First Amended Complaint detail the claims at issue
through correspondence. The Miller Law Group sent plaintiff’s CEO
a letter detailing what parts of the SP-16 infringe Claim 8 of the
‘957 Patent. (Doc. #30-3, Exh. 3.) Also attached is the response
from plaintiff’s law firm indicating that it was “an overly broad
interpretation”, and disagreeing with the assessment. (Doc. #304, Exh. 4.)

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the Counterclaim does not state a plausible claim as currently
pled, but that defendant could amend to do so.

The motion to

dismiss will be granted with leave to amend.
Accordingly, it is hereby
ORDERED:
Plaintiff’s

1.

Motion

to

Strike

Affirmative

Defenses

Pursuant to FRCP 12(f) (Doc. #36) is GRANTED in part and DENIED in
part.

The Affirmative Defenses are dismissed without prejudice

to filing amended defenses within FOURTEEN (14) DAYS of this
Opinion and Order.
2.

Plaintiff’s Motion to Dismiss Counterclaim Pursuant to

FRCP 12(b)(6) (Doc. #36) is GRANTED and the Counterclaim (Doc.
#33)

is

dismissed

without

prejudice

to

filing

an

Amended

Counterclaim within FOURTEEN (14) DAYS of this Opinion and Order.
DONE and ORDERED at Fort Myers, Florida, this
of August, 2018.

Copies:
Counsel of Record

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10th

day